The flaws in the analysis of the Court of Appeals relate for the most part to the court’s narrow conception of the obviousness inquiry reflected in its application of the TSM test. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent’s subject matter can
be proved obvious is by noting that there existed at the time of invention a known problem for which there was
an obvious solution encompassed by the patent’s claims.
The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. 119 Fed. Appx., at 288. The Court of Appeals failed to recognize that the
problem motivating the patentee may be only one of many ad-dressed by the patent’s subject matter. The question
is not whether the combination was obvious to the patentee but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.
The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art designed to solve the same problem. Ibid. The
primary purpose of Asano was solving the constant ratio problem; so, the court concluded, an inventor considering how to put a sensor on an adjustable pedal would have
no reason to consider putting it on the Asano pedal. Ibid. Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a puzzle. Regardless of Asano’s primary purpose, the design provided an obvious example of an adjustable pedal with a fixed pivot point; and the prior art was replete with
patents indicating that a fixed pivot point was an ideal mount for a sensor. The idea that a designer hoping to make
an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio
problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton.
The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be
proved obvious merely by showing that the combination of elements was “obvious to try.” Id., at 289 (internal quotation marks omitted). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that
it was obvious under §103.
The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling
prey to hindsight bias. A fact finder should be aware, of course, of the distortion caused by hindsight bias and must
be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U. S., at 36 (warning against a “temptationto read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against
slipping into the use of hindsight’” (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1964))). Rigid preventative rules that deny
fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires,
consideration of common knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine . . .”). Those decisions, of course, are not now before us and do not correct the errors of law made by the Court of Appeals in this case. The extent to which they may describe an analysis more consistent
with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future
cases. What we hold is that the fundamental misunderstandings identified above led the Court of Appeals in this case to apply a test inconsistent with our patent law decisions.
When we apply the standards we have explained to the instant facts, claim 4 must be found obvious. We
agree with and adopt the District Court’s recitation of the relevant prior art and its determination of the level of
ordinary skill in the field. As did the District Court, we see little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the Engelgau patent. A person having ordinary skill inthe art could have combined Asano with a pedal
position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so.
Teleflex argues in passing that the Asano pedal cannot be combined with a sensor in the manner described by claim 4 because of the design of Asano’s pivot mechanisms. See Brief for Respondents 48–49, and n. 17. Therefore, Teleflex reasons, even if adding a sensor to Asano
was obvious, that does not establish that claim 4 encompasses obvious subject matter. This argument was not,
however, raised before the District Court. There Teleflex was con-tent to assert only that the problem motivating the
invention claimed by the Engelgau patent would not lead to the solution of combining of Asano with a sensor. See Tele-flex’s Response to KSR’s Motion for Summary Judgment
of Invalidity in No. 02–74586 (ED Mich.), pp. 18–20, App. 144a–146a. It is also unclear whether the current
argument was raised before the Court of Appeals, where Tele-flex advanced the nonspecific, conclusory contention
that combining Asano with a sensor would not satisfy the limitations of claim 4. See Brief for
Plaintiffs-Appellants in No. 04–1152 (CA Fed.), pp. 42–44. Teleflex’s own ex-pert declarations, moreover, do not support the point Teleflex now raises. See Declaration of Clark J. Radcliffe, Ph.D., Supplemental App. 204–207; Declaration of
Timothy L. Andresen, id., at 208–210. The only statement in either declaration that might bear on the argument
is found in the Radcliffe declaration:
“Asano . . . and Rixon . . . are complex mechanical linkage-based devices that are expensive to
produce and assemble and difficult to package. It is exactly these difficulties with prior art designs that [Engel-gau] resolves. The use of an adjustable pedal with a single pivot reflecting pedal position combined with an electronic control mounted between the support
and the adjustment assembly at that pivot was a simple, elegant, and novel combination of features in the Engelgau ’565 patent.” Id., at 206, ¶16.
Read in the context of the declaration as a whole this is best interpreted to mean that Asano could not be used to solve “[t]he problem addressed by Engelgau ’565[:]
to provide a less expensive, more quickly assembled, and smaller package adjustable pedal assembly with
electronic control.” Id., at 205, ¶10.
The District Court found that combining Asano with a pivot-mounted pedal position sensor fell within the
scope of claim 4. 298 F. Supp. 2d, at 592–593. Given the sigificance of that finding to the District Court’s judgment, it is apparent that Teleflex would have made clearer
challenges to it if it intended to preserve this claim. In light of
Teleflex’s failure to raise the argument in a clear fashion, and the silence of the Court of Appeals on the issue, we take the District Court’s conclusion on the point to be correct.
The District Court was correct to conclude that, as of the time Engelgau designed the subject matter in claim 4, it was obvious to a person of ordinary skill to combine
Asano with a pivot-mounted pedal position sensor. There then existed a marketplace that created a strong incentive
to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance. The Court of Appeals considered the issue
too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both
Asano and a modular sensor similar to the ones used in the Chevrolet truck
line and disclosed in the ’068 patent. The District Court employed this narrow inquiry as
well, though it reached the correct result nevertheless. The proper question to have asked was whether a pedal de-signer of ordinary skill, facing the wide range of
needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.
In automotive design, as in many other fields, the inter-action of multiple components means that changing one component often requires the others to be modified
as well. Technological developments made it clear that engines using computer-controlled throttles would
become standard. As a result, designers might have decided to design new pedals from scratch; but they also would
have had reason to make pre-existing pedals work with the new engines. Indeed, upgrading its own pre-existing model led KSR to design the pedal now accused of infringing the Engelgau patent.
For a designer starting with Asano, the question was where to attach the sensor. The consequent legal
question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put
the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau put it would have
been obvious to a person of ordinary skill.
The ’936 patent taught the utility of putting the sensor on the pedal device, not in the engine. Smith, in turn, explained to put the sensor not on the pedal’s footpad but instead on its support structure. And from the known wire-chafing problems of Rixon, and Smith’s teaching that “the pedal assemblies must not precipitate any motion in the connecting wires,” Smith, col. 1, lines 35–37, Supple-mental App. 274, the designer would know to place the sensor on a nonmoving part of the pedal structure. The most obvious nonmoving point on the structure from which a sensor can easily detect the pedal’s position is
a pivot point. The designer, accordingly, would follow Smith in mounting the sensor on a pivot, thereby designing an adjustable electronic pedal covered by claim 4.
Just as it was possible to begin with the objective to upgrade Asano to work with a computer-controlled
throttle, so too was it possible to take an adjustable electronic pedal like Rixon and seek an improvement that would avoid the wire-chafing problem. Following similar steps to those just explained, a designer would learn from Smith
to avoid sensor movement and would come, thereby, to Asano because Asano disclosed an adjustable pedal with a fixed pivot.
Teleflex indirectly argues that the prior art taught away from attaching a sensor to Asano because Asano in its view is bulky, complex, and expensive. The only
evidence Teleflex marshals in support of this argument, however, is the Radcliffe declaration, which merely indicates
that Asano would not have solved Engelgau’s goal of making a small, simple, and inexpensive pedal. What the
declaration does not indicate is that Asano was somehow so flawed that there was no reason to upgrade it, or pedals like it, to be compatible with modern engines. Indeed, Teleflex’s own declarations refute this conclusion. Dr. Radcliffe states that Rixon suffered from the same bulk and complexity as did Asano. See id., at 206. Teleflex’s other expert, however, explained that Rixon was itself designed by adding a sensor to a
preexisting mechanical pedal. See id., at 209. If Rixon’s base pedal was not too flawed to upgrade, then Dr. Radcliffe’s declaration does not show Asano was either. Teleflex may have made a plausible argument that Asano is inefficient as compared to Engelgau’s preferred embodiment, but to judge
Asano against Engelgau would be to engage in the very hindsight bias Teleflex rightly urges must be avoided.
Accordingly, Teleflex has not shown anything in the prior art that taught away from the use of Asano.
Like the District Court, finally, we conclude Teleflex has shown no secondary factors to dislodge the determination that claim 4 is obvious. Proper application of Graham and our other precedents to these facts therefore leads to the conclusion that claim 4 encompassed obvious subject matter. As a result, the claim fails to meet the require-ment of §103.
We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau
voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We
never-the-less think it appropriate to note that the rationale under-lying the presumption—that the PTO, in its expertise,
has approved the claim—seems much diminished here. Next Page ->